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To determine whether a use is "experimental," a question of law, the totality of the circumstances must be considered, including various objective indicia of experimentation surrounding the use, such as the number of prototypes and duration of testing, whether records or progress reports were made concerning the testing, the existence of a secrecy agreement between the patentee and the party performing the testing, whether the patentee received compensation for the use of the invention, and the extent of control the inventor maintained over the testing. The last factor of control is critically important, because, if the inventor has no control over the alleged experiments, he is not experimenting. If he does not inquire about the testing or receive reports concerning the results, similarly, he is not experimenting.
Plaintiff improved upon a seal used on defendant's boat motors and distributed prototypes of his invention. After more than a year, in which he did not solicit comments on the quality of the prototypes, plaintiff applied for, and received, a patent on the seal. Defendant then patented an improved seal. Plaintiff sued for patent infringement, while defendant counterclaimed for patent invalidity. After the jury returned a verdict for plaintiff, defendant argued for judgment as a matter of law, because plaintiff's product had been in public use for more than one year before the patent application. Plaintiff contended the use constituted protected experimentation.
Did plaintiff’s use of the seal constitute protected experimentation, and thus, would not fall within the ambit of prior use for patent law purposes?
The Court held that in order to justify a determination that legally sufficient experimentation has occurred to rebut the bar of public use in patent law, certain minimal indicia of experimentation must be present, one of which was the extent of control the inventor maintained over the testing. In this case, the court held plaintiff did not have sufficient control over the prototypes nor did he receive feedback on their performance. Thus, the court held that plaintiff's patent was invalid due to prior public use, and granted judgment as a matter of law.